T 0416/21 - Reply to the preliminary opinion

Key points

• The proprietor files an auxiliary request in reply to a new objection in the preliminary opinion of the Board.
• The Board: "If the submission of auxiliary request 0 was actually a response to the Board's communication, this application should have been submitted promptly after delivery of the communication (of August 23, 2023) and not only with the letter of November 3, 2023, and a few days before the oral hearing (November 10, 2023)."
• At any rate, the Board considers the objection to be not a new one.
• The request is not admitted.
  
  
• The appeal of opponent II is deemed to not have been filed. The opponent paid the appeal fee at the reduced rate but was not an SME.
• The Board, in translation:" Opponent II admitted that it was not an SME and that the payment of the reduced appeal fee was made in error. During the oral proceedings before the board, she withdrew an original request for correction of the form for payment of the fee in accordance with Rule 139 EPC."
• " The correct appeal fee (in full) was only paid shortly before the oral hearing. Opponent II did not pay the appeal fee in the correct amount within the time limit set out in Article 108, first sentence, EPC. According to Article 108, second sentence, EPC, the appeal is deemed not to have been filed."
• "During the oral hearing, opponent II invoked the principle of the protection of legitimate expectations. [Arguing that] she paid the reduced fee well before the deadline, so there would have been enough time [for the EPO] to point out this obvious deficiency." (G 2/97, headnote). 
• "opponent II could not expect to be informed by the EPO that the incorrect appeal fee had been paid. There is nothing in the Notice of appeal, the fee payment form or other submission that obviously requires clarification or reminder. On the contrary, the submissions were clear: the notice of appeal stated that the official appeal fee of EUR1,955.00 (fees no. 011) would be paid from the current account. This amount corresponds to the reduced fee. The accompanying letter for subsequently submitted documents (Form 1038) contains the information that the reduced appeal fee (in the amount of EUR 1,955.00) must be debited from the current account. A defect claimed by opponent II that was “obvious” to the board was therefore not present."
• The appeal of opponent I is admissible and the patent is revoked. 

EPO 

The link to the decision is provided after the jump, as well as (an extract of) the decision text.

https://www.epo.org/de/boards-of-appeal/decisions/t210416du1

3. Opponent II's appeal is deemed not to have been filed.

3.1 The respondent claimed that opponent II only paid the reduced appeal fee, even though it did not meet the requirements of a small and medium-sized enterprise (SME).

3.2 Opponent II admitted that it was not an SME and that the payment of the reduced appeal fee was made in error. During the oral proceedings before the board, she withdrew an original request for correction of the form for payment of the fee in accordance with Rule 139 EPC.

3.3 The correct appeal fee (in full) was only paid shortly before the oral hearing. Opponent II did not pay the appeal fee in the correct amount within the time limit set out in Article 108, first sentence, EPC. According to Article 108, second sentence, EPC, the appeal is deemed not to have been filed.

3.4 During the oral hearing, opponent II invoked the principle of the protection of legitimate expectations. Accordingly, she paid the reduced fee well before the deadline, so there would have been enough time to point out this obvious deficiency.

This presentation did not convince the chamber.

The principle of the protection of legitimate expectations does not, in principle, oblige the Boards of Appeal to inform a complainant that an appeal fee is still outstanding even if he has

filed the complaint early enough to be able to pay the fee in time (see G 2/97, guiding principle). An appellant cannot shift his responsibility for meeting the requirements for an admissible appeal to the Board of Appeal (G 2/97, Reasons 4.2).

In the board's opinion, these principles also apply to the present case of the payment of the incorrectly paid reduced appeal fee. For this reason alone, an appeal to the protection of legitimate expectations cannot lead to the payment of the fee being accepted in the correct (full) amount.

In the present case, opponent II could not expect to be informed by the EPO that the incorrect appeal fee had been paid. There is nothing in your letter of complaint, fee payment form or other submission that obviously requires clarification or reminder. On the contrary, the submissions were clear: the notice of appeal stated that the official appeal fee of ¤1,955.00 (fees no. 011) would be paid from the current account. This amount corresponds to the reduced fee. The accompanying letter for subsequently submitted documents (Form 1038) contains the information that the reduced appeal fee (in the amount of ¤1,955.00) must be debited from the current account. A defect claimed by opponent II that was “obvious” to the board was therefore not present.